Prosecco People Move On From Bullying Puns Over Trademark To Bullying Portmanteau Over Trademark

from the no-means-no dept

Back in 2018, we wrote about the Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, heretofore called only "The Prosecco People" to save my brain, opposing the trademark for a pet treats company over its branded doggy drink "Pawsecco." The EU IPO, in one of the most bizarre trademark rulings I've ever seen, acknowledged that there was almost no chance for any actual customer confusion over the use of "Pawsecco", but found in favor of The Prosecco People anyway, strictly because Prosecco was a well-known thing, and Woof and Brew's pun was referencing a well-known thing. That is simply not the purpose of trademark law. The entire idea is that the public shouldn't be confused in a given market of goods as to the origin of competing products. Pet drinks and Italian knockoffs of champagne seem fairly distinct in the marketplace.

As do alcoholic and non-alcoholic drinks, for that matter, and yet here come The Prosecco People again. This time, they are going after a French wine group that created a non-alcoholic sparkling grape drink and named it "Nosecco."

A French wine group is challenging a decision that its non-alcoholic Nosecco brand unlawfully evoked the protected Italian category Prosecco. Les Grands Chais de France said the name wasn’t meant to rival Prosecco in the U.K., but rather to highlight the lack of alcohol and the sweetness of its own version.

“It’s emphatically saying ‘no’. No to alcohol, it’s no to being dry.” said Denise McFarland, a lawyer for the French group. “It sits there in gold and black,” on the label, she said Friday.

Here we'll have to see just how and when British courts will break from EU precedent given the whole Brexit thing. But, if EU precedent still holds, it feels virtually impossible for the Nosecco people to win over The Prosecco People in this case. If pet drinks aren't distinct enough from alcohol to stave off trademark opposition, non-alcoholic human drinks probably don't stand a chance.

And, yet, you'd have to expect that ruling to carry the same admission over a lack of consumer confusion. After all, the whole point of the Nosecco name is to give a nod towards Prosecco while creating the distinction of the lack of alcohol. Prosecco, mind you, isn't really a brand in and of itself. It's a drink type, like Champagne. That it has protected status in the EU at all is fairly silly, but it's still the case that Nosecco doesn't compete with a single brand, but rather a loose consortium of Prosecco producers.

Even The Prosecco People are pointing to the idea that Nosecco brings "to mind" Prosecco.

The Italian producers said in a legal filing it was “abundantly clear” that the Nosecco brand brought to mind their own wine, which is protected by European Union rules on origin.

Well, yeah. That's the entire point. Sort of like how the entire point of trademark law is to protect from customer confusion, which almost certainly doesn't exist in this case. It would be nice if the courts could keep that in mind this go-round.

Filed Under: eu, nosecco, pawsecco, proseco, trademark
Companies: les grand chais de france, proseco, woof and brew

Woof: The Prosecco People Successfully Oppose A Pet-Treat Company's 'Pawsecco' Trademark Application

from the punderful dept

In the realm of the alcohol industry, the French champagne makers have distinguished themselves for their jealous protection of the name of their sparkling white wine. This protectionism is taken to the extreme, with association groups representing champagne makers essentially forbidding anyone else from even using the term. France's neighbor, Italy, has its own sparkling white wine called prosecco. And it seems that the makers of prosecco are trying to take a page from their champagne-making cousins in "protecting" their trademarks to a ridiculous degree.

A maker of drinks for pets recently tried to trademark the name of a product it makes called "Pawsecco." The pet treat is not alcoholic, is sold only to pet owners, and is, frankly, puntastic. Despite all of this being supremely obvious, Woof and Brew faced a trademark opposition from the prosecco people.

‘Pawsecco’ was opposed by Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, the Italian organisation responsible for the protection and promotion of Prosecco’s PDO. The PDO relates to wines deriving from a particular vine species, within specific grape-growing areas in Italy. For a wine to qualify as Prosecco there are also unique bottling and labelling requirements.

Consorzio said the applied-for mark would be confused with its earlier registered EU trademark (EUTM), which features the words ‘Prosecco PDO’ in a circle around the silhouette of glasses (EUTM number 11,619,764).

Okay, a couple of things here. First, the claims of potential confusion are clearly ridiculous. The products in question are not remotely similar, save for a tongue-in-cheek pun-based name Woof and Brew devised for its product. Even that pun is of the kind that clearly identifies the product differences and comes as part of a long-running tradition of pet stores punning known brands in selling their pet equivalents. Any clear reading of this opposition leaves the reader thinking that it is absolutely absurd.

Second, is this really the best look for a trade group representing prosecco makers? After all, embedded in the opposition is that its products, billed as a classy, high-quality sparkling wine, could be confused with something pet owners feed to their dogs. Is that really the claim the consortium wants to make?

Amazingly, despite all of this, Team Prosecco actually won its opposition. After admitting in its ruling that there is no chance for public confusion over any of this, the UK IPO then decided that the very allusion to prosecco warranted a refusal of the "Pawsecco" mark.

It agreed with Consorzio’s assertion that the ‘Pawsecco’ mark was “coined in order to allude to a type of wine”, though the IPO noted that “it is highly unlikely that pet owners would assume that the product was actually wine”.

Overall, “the nature of the whole marketing strategy appears predicated upon an assumption that the potential consumer will see the evocation,” the IPO said, adding it is an “inevitable conclusion” that Woof and Brew saw “some form of commercial benefit in choosing (and using) the name that it did”. Woof and Brew is therefore “taking advantage of the strong reputation possessed by the PDO, riding on its coat-tails”, and to “tolerate such use would not promote fair competition”, the IPO concluded.

And so Woof and Brew doesn't get its trademark and has to pay the consortium nearly $3,000 for costs incurred in opposing the trademark. All for a trademark conflict that the IPO itself admits contains no risk for confusing the public consumer.

And they say trademark laws are broken.

Filed Under: pawsecco, pets, prosecco, trademark, wine
Companies: woof and brew